DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 has been amended to recite that one of the high or low epoxy equivalent epoxy resins is a triglycidyl ether of polyhydric phenol of formula (I). There is no support in the original specification for this feature, as the compound of formula (I) is referred to only as a diglycidyl ether. There is no teaching in the original specification of a triglycidyl ether of the claimed formula.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Considering Claim 4: Claim 4 has been amended to recite that one of the high or low epoxy equivalent epoxy resins is a triglycidyl ether of polyhydric phenol of formula (I). The structure of formula (I) has two glycidyl ether groups. It is unclear how the structure of formula (I) would be considered to be a triglycidyl ether, and thus the scope of the claim is unclear.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 8, 10, 11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (CN 108690457) in view of Chen et al. (US Pat. 9,346,925) and Patel et al. (US 2012/0328811). Note: A machine translation is being used for CN 108690457.
Considering Claim 1, 13, and 14: Zhao et al. teaches a two component epoxy resin paint (pg. 4) comprising an aqueous epoxy resin emulsion comprising a first epoxy emulsion having an epoxy equivalent weight of 400 to 800, and a second epoxy emulsion having an epoxy equivalent weight of 900 to 1000 (pg. 4) and a curing agent (pg. 4).
Zhao et al. does not teach the second epoxy component as having the claimed epoxy equivalent weight. However, Chen et al. teaches an epoxy emulsion using a epoxy resin having a epoxy equivalent weight of 1600-1950 (8:40-60). Zhao et al. and Chen et al. are analogous art as they are concerned with the same field of endeavor, namely epoxy emulsions. It would have been obvious to a person of ordinary skill in the art to have used the epoxy of Chen et al. as the high epoxy equivalent weight component of Zhao et al., and the motivation to do so would have been, as Chen et al. suggests, to provide high flexibility and toughness to the cured product (1:30-38).
Zhao et al. does not teach the glass transition temperature of the second epoxy resin. However, Patel et al. teaches epoxy resins with a glass transition temperature of 150 ºC (¶0005). Zhao et al. and Patel et al. are analogous art as they are concerned with the same field of endeavor, namely epoxy resins. It would have been obvious to a person of ordinary skill in the art to have selected an epoxy resin with the claimed glass transition temperature, as in Patel et al., and the motivation to do so would have been, as Patel et al. suggests, to provide good high temperature properties (¶0005).
Zhao et al. teaches the ratio of the first and second emulsions as being 0.8-1.2:0.8-1.2 (pg. 4), which overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It would have been obvious to a person of ordinary skill in the art to have used the overlapping portion of the claimed range, and the motivation to do so would have been, as Zhao et al. suggests, it is a suitable ratio for the invention.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the emulsion stability, pot life, and initial sanding property would necessarily arise from a composition with all the claimed ingredients. It is noted that the emulsion stability refers to a specific test in the original specification. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 8 and 10: Zhao et al. teaches the combined emulsion as having a solid content of 45 to 55 weight percent (pg. 4). It would have been obvious to a person of ordinary skill in the art to have prepared the precursor emulsions at the same solid content to simplify the processing of the emulsions.
Considering Claim 11: Zhao et al. teaches the coating as comprising 30 to 60 parts of the epoxy emulsion, less than 30 parts of filler, and less than 60 weight percent of a wetting agent (pg. 3).
Considering Claim 15: Zhao et al. teaches using the paint as a middle coat/intermediate coat (pg. 3).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (CN 108690457) in view of Chen et al. (US Pat. 9,346,925) as applied to claim 1 above, and further in view of Birnbrich et al. (US Pat. 8,273,853).
Considering Claim 5: Zhao et al. teaches the composition of claim 1 as shown above. Zhao et al. further teaches the use of water as the emulsifier.
Zhao et al. does not teach a reactive emulsifier. However, Birnbrich et al. teaches using a reactive emulsifier in an epoxy emulsion (1:57-67). Zhao et al. and Birnbrich et al. are analogous art as they are concerned with the same field of endeavor, namely epoxy emulsions. It would have been obvious to a person of ordinary skill in the art to have added the reactive emulsifier of Birnbrich et al. in the emulsion of Zhao et al., and the motivation to do so would have been, as Birnbrich et al. suggests, they are suitable for emulsions having epoxy resin weights disclosed in Zhao et al. (1:30-40).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (CN 108690457) in view of Chen et al. (US Pat. 9,346,925) as applied to claim 1 above, and further in view of Pataki (US Pat. 4,741,947).
Considering Claim 12: Zhao et al. teaches the composition of claim 1 as shown above.
Zhao et al. teaches using an amine curing agent. Pataki teaches using dicyandiamide as the preferred curing agent for an epoxy emulsion (5:31-41; Table 3). Zhao et al. and Pataki are analogous art as they are concerned with the same field of endeavor, namely epoxy emulsions. It would have been obvious to a person of ordinary skill in the art to have used the curing agent of Pataki in the epoxy emulsion of Zhao et al., and the motivation to do so would have been, as Pataki suggests, they are conventional curing agents for epoxy emulsions (5:31-41).
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the references don’t teach a stable emulsion is not persuasive. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the emulsion stability, pot life, and initial sanding property would necessarily arise from a composition with all the claimed ingredients. It is noted that the emulsion stability refers to a specific test in the original specification. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
The applicant has not provided any objective evidence to establish that the stability is not present in the prior art or unexpected. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112.
B) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to a person of ordinary skill in the art to have used the epoxy of Chen et al. as the high epoxy equivalent weight component of Zhao et al., and the motivation to do so would have been, as Chen et al. suggests, to provide high flexibility and toughness to the cured product (1:30-38).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767